The Federal Circuit recently decided two related cases concerning media content delivery patents1 owned by Affinity Labs of Texas, LLC. In both cases, the Federal Circuit held that the patents do not cover patent-eligible subject matter under 35 U.S.C. § 101.
On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written description of its priority application (“Priority App”) and thus entitled to the Priority App filing date. The ’915 Patent is directed to a protein, TBP-II, that binds to and neutralizes TNF-alpha. However, the Priority App discloses only a partial N-terminal sequence of the claimed protein (9 of 15 residues), along with other properties of the protein, including molecular weight, biological activity, and trypsin-degradation characteristics.
The Patent Trials and Appeals Board ruled that Petitioner could not maintain a subsequent proceeding with respect to the same claim on a ground that it “reasonably could have raised” in a prior proceeding despite Petitioner being successful in invalidating those claims in the prior proceeding.
On January 12, 2016, President Barack Obama announced his goal of a nationwide “Cancer Moonshot,” with the ultimate goal of accelerating cancer research “to end cancer as we know it” during his State of the Union Address. As a part of the response, the U.S. Patent and Trademark Office (“the Office”) established a program for accelerated review of patent applications directed toward one particular promising area of cancer research.
The Supreme Court decision Alice Corp. v. CLS Bank, 134 S. Ct. 2347 (2014) pronounced, in no uncertain terms, preemption “drives” patent subject matter eligibility and its exceptions. But after Alice, it appeared preemption’s star turn might not come.
Can boilerplate language describing possible variations to an invention ever impact validity of a patent? Many software patents include standard “boilerplate” text describing many ways to implement an invention, such as by discussing execution of the software on a smart phone, laptop, mainframe, PDA, audio player, or even a refrigerator! Often, such boilerplate language is added to patent applications with consideration of broadening the potential scope of the recited terms or providing additional support for recited claim terms.
On September 15, 2016, the U.S. Food and Drug Administration approved once-daily YOSPRALA™, a tablet that combines the anti-platelet agent, aspirin, with the anti-acid drug, omeprazole for decreasing the risk of aspirin-associated gastric ulcers in patients who require daily aspirin for secondary prevention of cardiovascular and cerebrovascular events.
Two recently issued decisions by federal courts highlight the uncertainty around claims to software-implemented inventions after the Supreme Court decision in Alice v. CLS Bank. Both decisions relate to the patent eligibility of software that uses rules to process information and generate resultant data. In both cases, the claimed inventions use software to automate tasks that otherwise may be done by humans, with results that are apparently more accurate than prior systems. However, the court in the first case held that the claims were invalid under 35 U.S.C. § 101 for claiming unpatentable subject matter, while the court in the second case reached the opposite outcome.
On August 29, 2016, the Regents of the University of Minnesota (“the University”) filed suit against Gilead Sciences (“Gilead”) for patent infringement in the District Court for the District of Minnesota. According to the complaint, the University alleges that Gilead’s sale of drugs containing the nucleotide analog sofosbuvir infringes their U.S. Patent No. 8,815,830 (the ’830 patent).
During its August Patent Quality Chat, the USPTO discussed the recently launched Patent Prosecution Pilot Program (P3). The P3 program is a hybrid of the After-final Consideration Pilot (AFCP 2.0), which has been available since 2013, and Pre-Appeal Brief Conference Pilot Program, which has been available since 2005. It is intended to offer applicants an alternative avenue to request reconsideration of a final Office Action without filing a RCE or an appeal before PTAB. However, the program only runs for four more months, and there are a limited number requests available for Technology Center 1600, so you need to act soon.
